DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1-26 were previously pending. Claims 1, 7, 13, 17, 21-22, 24, and 26 were amended and claims 5-6, 14, 16, 23, and 25 were canceled in the reply filed April 20, 2026. Claims 1-4, 7-13, 15, 17-22, 24, and 26 are currently pending.
Response to Arguments
Applicant's amendments overcome the rejection of claim 22 made under § 112(a) and it is withdrawn.
Applicant's amendments partially address the rejection of claims 10 and 20 made under § 112(b). While a compartment installation has been introduced in claim 1, it is recited in the alternative. Thus, it is unclear how these limitations in claim 10 and 20 would be practiced in an embodiment where the compartment installation is not part of the invention.
Applicant's amendments overcome the rejection of claim 22 made under § 112(d) and it is withdrawn.
Applicant's amendments overcome the rejection of claim 22 made under § 101 for the claim not falling within any statutory category and it is withdrawn.
Applicant's amendments and arguments filed with respect to the rejection made under § 101 for claims 1-4, 7-12, and 19-22 being directed to an abstract idea have been fully considered and the rejection is withdrawn. While the claims recite the abstract idea of determining shipping information, they also recite meaningful and non-generic additional elements that integrate the abstract idea into a practical application. See Remarks, 19-20.
Applicant's arguments filed with respect to the rejections made under §§ 102 & 103 have been fully considered but are moot in view of the new grounds of rejection.
Election/Restrictions
Newly submitted claims 13, 15, 17-18, 24, and 26 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-4, 7-12, and 19-22, drawn to a method, medium, and system, classified in G06Q 10/083.
II. Claims 13, 15, 17-18, 24, and 26, drawn to a method, server, and system, classified in G06Q 10/0835.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case, subcombination II has separate utility such as providing the measurement information at the measuring module prior to being obtained. See MPEP § 806.05(d).
The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Inventions I and II are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case, subcombination II has separate utility such as obtaining at least one measurement information from the measuring module, a mobile device, or a compartment installation, and is providing it at the measuring module prior to being obtained. See MPEP § 806.05(d).
The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: the inventions have acquired a separate status in the art in view of their different classification and the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries). The differences between the inventive groups would require time-consuming differences in search procedure. Applicable prior art is likely to be found in different areas and would need to be separately discovered, analyzed, and tailored to construct rejections for the different inventions, or to determine their allowability. Search strings for one invention are not likely to uncover relevant prior art usable for the other two inventions without multiple independent and distinct searches. The inventions also present different temporal limitations which are difficult to search. The applicable CPC subgroups are relatively large areas that can only be reviewed using directed text searching and by utilizing crossover searches into other areas specified for each invention. Moreover, the claims present different issues with respect to §§ 112 and 101, further increasing the examination burden.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 13, 15, 17-18, 24, and 26 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4, 7-12, and 19-22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites "determining, by the mobile device or the compartment installation, shipping information for shipping the shipment, at least partially based on the plurality of shipping options and a user input." The mobile device and compartment installation are recited in the alternative with a third possible alternative (i.e., "transmitting the measurement information to the backend server"). Thus, the scope and requirements of this limitation is unclear in the embodiment where the mobile device and compartment installation are not part of the invention or, if this limitation is only contingent on those elements being a part of the invention (which the language of the claim does not specify). The dependent claims inherit the rejections of their respective base claims and, as such, are rejected for the same reasons.
Claims 10 and 20 recite the limitation "the compartment installation." While claim 1 contains antecedent basis for the claim term, it is recited in the alternative. Thus, it is unclear how these limitations in claim 10 and 20 would be practiced in an embodiment where the compartment installation is not part of the invention.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-3, 7, 9-10, and 19-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mercier, et al., U.S. Pat. Pub. No. 2009/0119232 (Citation 1 of the IDS filed 9/10/2024) in view of Ridgel, U.S. Pat. Pub. No. 2023/0177452 (Reference A of the attached PTO-892).
As per claim 1, Mercier teaches a method comprising: causing, by a control unit of a lockable measuring module, the opening of the lockable measuring module (¶¶ 0061, 69); obtaining, by the control unit, at least one measurement parameter of a shipment deposited in the measuring module (¶ 0070); and providing, by the control unit, at least partially based on the obtained at least one measurement parameter, measurement information, wherein the measurement information represents at least one weight and/or size of the shipment deposited in the measuring module, and wherein a shipping option for shipping the shipment is determined, at least partially based on the provided measurement information (¶¶ 0078, 95); and wherein the method further comprises: determining shipping information for shipping the shipment, at least partially based on a user input (¶¶ 0094-95).
Mercier does not explicitly teach a plurality of shipping options for shipping the shipment is determined, at a backend server, at least partially based on the provided measurement information; and wherein providing the measurement information further comprises: transmitting the measurement information to the backend server; or transmitting the measurement information to a mobile device, wherein the transmitted measurement information is forwarded from the mobile device to the backend server; or transmitting the measurement information to a compartment installation, wherein the transmitted measurement information is forwarded from the compartment installation to the backend server, wherein the plurality of shipping options is transmitted from the backend server to the mobile device or the compartment installation; and that the shipping options are determined by the mobile device or the compartment installation at least partially based on the plurality of shipping options.
Ridgel teaches a plurality of shipping options for shipping the shipment is determined, at a backend server, at least partially based on the provided measurement information (¶¶ 0078, 81); and wherein providing the measurement information further comprises: transmitting the measurement information to the backend server (¶¶ 0053, 83); or transmitting the measurement information to a mobile device, wherein the transmitted measurement information is forwarded from the mobile device to the backend server; or transmitting the measurement information to a compartment installation, wherein the transmitted measurement information is forwarded from the compartment installation to the backend server, wherein the plurality of shipping options is transmitted from the backend server to the mobile device or the compartment installation; and that the shipping options are determined by the mobile device or the compartment installation at least partially based on the plurality of shipping options (¶¶ 0061, 95). It would have been prima facie obvious to incorporate these elements because it is merely a combination of old elements in the art of shipping transactions. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
As per claim 2, Mercier in view of Ridgel teaches claim 1 as above. Mercier further teaches determining, after causing the opening of the measuring module, whether the shipment has been deposited in the measuring module (¶¶ 0078, 91-95); causing the locking of the measuring module if it is determined that the shipment has been deposited in the measuring module (¶ 0097); and causing the unlocking of the measuring module after the at least one measurement parameter of the shipment has been obtained (¶ 0081).
As per claim 3, Mercier in view of Ridgel teaches claim 1 as above. Mercier further teaches the opening of the lockable measuring module is caused if it is determined that obtained access information provides authorization for opening the measuring module (¶¶ 0081, 103).
As per claim 7, Mercier in view of Ridgel teaches claim 1 as above. Mercier further teaches causing the providing of a shipping labeling, wherein the shipping labeling is at least partially based on the shipping information (¶ 0115).
As per claim 9, Mercier in view of Ridgel teaches claim 1 as above. Mercier further teaches obtaining franking information of the deposited shipment, wherein the franking information indicates franking of the deposited shipment (¶ 0096).
As per claim 10, Mercier in view of Ridgel teaches claim 1 as above. Mercier further teaches causing, after providing the measurement information, the storing of the shipment in the compartment installation for the shipping of the shipment in accordance with the shipping information (¶ 0096).
As per claim 19, Mercier in view of Ridgel teaches claim 1 as above. Mercier further teaches the measuring module comprises at least one sensor for detecting the at least one measurement parameter of the shipment, and wherein the at least one measurement parameter of the shipment is detected by the at least one sensor while the shipment is located in the measuring module (¶¶ 0070, 78).
As per claim 20, Mercier in view of Ridgel teaches claim 1 as above. Mercier further teaches the measuring module is a part of the compartment installation (¶¶ 0091, 96).
As per claim 21, Mercier in view of Ridgel teaches a computer program, comprising program instructions that cause a processor to perform and/or to control the method according to Claim 1 when the computer program runs on the processor (¶ 0068, see also citations and obviousness rationale above).
As per claim 22, Mercier in view of Ridgel teaches an apparatus, configured to perform and/or control the method according to Claim 1 or comprising respective means for performing and/or controlling the steps of the method according to Claim 1 (Fig. 1, ¶ 0068, see also citations and obviousness rationale above).
Claims 4 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Mercier, et al. in view of Ridgel as applied to claims 1 and 10 above, further in view of Tateno, et al., U.S. Pat. No. 4,836,352 (Citation 5 of the IDS filed 9/10/2024).
As per claim 4, Mercier in view of Ridgel teaches claim 1 as above. Mercier further teaches determining, after the at least one measurement parameter has been obtained, whether a shipment is located in the measuring module (¶ 0078). Mercier does not explicitly teach if it is determined that no shipment is located in the measuring module, causing the locking of the measuring module; which is taught by Tateno (col. 3, lines 44-49—green lamp indicates the box is empty; col. 6, lines 23-32). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Tateno—namely, to limit access to the module to only when transactions are being processed (see cols. 6-7). Moreover, this is merely a combination of old elements in the art of shipping. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
As per claim 11, Mercier in view of Ridgel teaches claim 10 as above. Mercier does not explicitly teach causing the transporting of the shipment from the measuring module into the compartment installation; which is taught by Tateno (col. 10, lines 29-40). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Tateno—namely, to move the shipment to a longer-term storage location while freeing up the measurement module for other customers. Moreover, this is merely a combination of old elements in the art of shipping. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
Claims 8 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Mercier, et al. in view of Ridgel as applied to claims 1 and 10 above, further in view of Abutbul, U.S. Pat. Pub. No. 2016/0321600 (Citation 2 of the IDS filed 9/10/2024).
As per claim 8, Mercier in view of Ridgel teaches claim 1 as above. Mercier does not explicitly teach causing the packaging of the shipment at least partially based on the provided measurement information; which is taught by Abutbul (¶¶ 0033, 41). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Abutbul—namely, to prepare shipments that have not yet been packaged. Moreover, this is merely a combination of old elements in the art of shipping. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
As per claim 12, Mercier in view of Ridgel teaches claim 10 as above. Mercier does not explicitly teach causing the storing of the shipment further comprises: if it is determined at least partially based on the provided measurement information that the shipment is a letter shipment, causing the transporting of the shipment from the measuring module into the compartment installation; and if it is determined at least partially based on the provided measurement information that the shipment is a parcel shipment, causing the opening of the measuring module, wherein the shipment is removed from the measuring module and is deposited in a compartment of the compartment installation, said compartment being determined at least partially based on the provided measurement information; which is taught by Abutbul (¶¶ 0033, 47, 57). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Abutbul—namely, to store similarly sized shipments together. Moreover, this is merely a combination of old elements in the art of shipping. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL VETTER whose telephone number is (571)270-1366. The examiner can normally be reached M-F 9:00-6:00.
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/DANIEL VETTER/Primary Examiner, Art Unit 3628
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